Wigwam Mills, Inc. v.
Claim Number: FA0701000903891
PARTIES
Complainant is Wigwam Mills, Inc. (“Complainant”), represented by Brian
M. Davis, of Alston & Bird, LLP, Bank of America
Plaza,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wigwammills.com>, registered with Compana, Llc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 26, 2007; the
National Arbitration Forum received a hard copy of the Complaint on January 29, 2007.
On Febuary 5, 2007, Compana, Llc confirmed by e-mail to the
National Arbitration Forum that the <wigwammills.com> domain name is
registered with Compana, Llc and that the
Respondent is the current registrant of the name. Compana, Llc
has verified that Respondent is bound by the Compana,
Llc registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On February 6, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 26, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@wigwammills.com by e-mail.
A timely Response was received and determined to be complete on February 26, 2007.
A timely Additional Submission was received from Complainant and
determined to be complete on March 2, 2007.
On March 6, 2007 pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David A. Einhorn as Panelist.
A timely Additional Submission was received from
Respondent and determined to be complete on March 7, 2007.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
makes the following assertions:
1.
Complainant, Wigwam Mills,
Inc., owns several registrations and applications for the WIGWAM mark
worldwide, including U.S. Registration No. 543,445, issued June 5, 1951. Complainant further contends that Respondent’s <wigwammills.com> domain name is
confusingly similar to Complainant’s WIGWAM and WIGWAM MILLS mark and trade
name.
2.
Complainant
contends that Respondent does not have any rights or legitimate interests in
the <wigwammills.com> domain name.
3.
Complainant contends that
Respondent registered and used the <wigwammills.com>
domain name in bad faith.
B. Respondent
Respondent argues that while Complainant concededly owns rights in the
WIGWAM mark, that those rights do not extend to the
subject domain name <wigwammills.com>. Wigwam Mills,
Inc. is a trade name, and therefore is not entitled to the protection afforded
a trademark or service mark. Neither has
Complainant provided evidence that it had common law trademark rights at the
time the disputed domain name was registered.
C. Additional Submissions
In its Additional Submission, Complainant contends that the WIGWAM
MILLS mark is well-known in the apparel industry. Further, Complainant submits that the <wigwammills.com> domain name is confusingly similar to its registered
WIGWAM mark.
In Respondent’s Additional Submission, it reiterates
that Complainant has not presented evidence of prior use and investment by
Complainant in the alleged WIGWAM MILLS mark sufficient to establish
enforceable common law trademark rights.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Paragraph 4(a)(i) of the Policy requires
Complainant to show that Respondent’s domain name is identical or confusingly
similar to a mark in which Complainant has rights. Complainant has to show that it has trademark
rights to the word WIGWAM through several applications and registrations of the
mark WIGWAM worldwide. However, the
Panel finds that the term WIGWAMMILLS, contained in Respondent’s domain name,
is neither identical to, nor confusingly similar to, the term WIGWAM alone.
With respect to Complainant’s assertion of common law rights to the
term WIGWAM MILLS, the Panel finds that Complainant’s self-serving assertions
that it has used this mark in commerce sufficiently to create common law rights
is not supported by objective evidence provided by Complainant. See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715
(Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish
common law rights in its mark because mere assertions of such rights are
insufficient without accompanying evidence to demonstrate that the public
identifies the complainant’s mark exclusively or primarily with the
complainant’s products); see also Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not
support a finding of common law rights in a mark in lieu of any supporting
evidence, statements or proof (e.g., business sales figures, revenues,
advertising expenditures, number of consumers served, trademark applications or
intent-to-use applications)).
The use of the term WIGWAM MILLS by Complainant in the form of the
trade name, Wigwam Mills, Inc., is insufficient to satisfy Policy §
4(a)(i). See Diversified Mortgage, Inc. v. World Time Partners, FA 118308 (Nat.
Arb. Forum Oct. 30, 2002) (finding that the Policy makes clear that its rules
are intended only to protect trademarks, registered or common law, and not mere
trade names).
Because this Panel has determined that Complainant has not satisfied
Policy § 4(a)(i), there is no need for the Panel to decide whether Respondent
has rights or legitimate interests in the domain name or whether Registrant
registered or used the domain name in bad faith.
DECISION
As Complainant has failed to establish the requirements of Policy § 4(a)(i), Complainant’s requested relief is hereby DENIED.
David A. Einhorn, Panelist
Dated: March 20, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page